What's in a Name? Can Native Americans Control Outsiders' Use of their Tribal Names?
December 1994
Author
Janet
McGowan
In the United States, Native American names and symbols appear on many company products. Jeep Cherokee, Pontiac cars, Shawmut Bank, Mohawk Paper Company, Crazy Horse Malt Liquor and Sioux Industries are just a few examples. Indigenous names seem to be showing up more frequently, maybe a case of commercial markets following the renewed interest in Native peoples in the United States. Urban Outfitters, a national clothing and housewares chain selling to the youth market, recently named a marketing division the "Department of Anthropologie" and sells a line of housewares under the name, "Zuni," the name of a Pueblo Indian Nation.

These practices are prevalent in particular industries. Many natural foods companies sell traditional indigenous foods (such as wild rice, blue corn and potatoes), using tribal names, pictures of Native peoples and symbols on product labels. Several cosmetics containing traditional Native plants and these products display similar advertising practices. The Self-Help and New Age spiritual movements freely pick and choose among the great diversity of sacred Native beliefs, religions and ways of life, using indigenous names and symbols with their seminars, books and programs.

Indigenous beliefs, names, symbols and practices clearly are worth money in the American marketplace. The market is so lucrative that companies frequently blur the line between authentic indigenous products and non-indigenous products. Hopi Blue Popcorn is a prime example of a company that has wrapped itself in Native American-ness. The Hopi Blue Popcorn label has a picture of Hopi women wearing traditional clothing and hair styles, working in a field with corn plants sowed several feet apart, a traditional Pueblo desert planting technique. The label copy tells a story that blue corn was grown by the Hopi and was an integral part of their religious life. Despite all these strong suggestions, there is no connection between the Hopi People and this product. The corn is not Hopi blue corn-it is not even blue corn. Instead, it is a hybrid of yellow and blue corn. The product is not sold by any Hopi and the popcorn probably isn't farmed in the way shown on the label. Finally, the Hopi and the other Pueblos do grow blue corn and blue corn is sacred and part of their spiritual life. However, consumers reading this label could easily believe that this product contains Hopi blue corn, that the corn was grown by the Hopis, grown in the traditional way or that Hopis themselves sell this product.

The names and symbols of indigenous groups may be among the few remaining resources or cultural properties of many indigenous societies. Can the unauthorized use of Native names and symbols be stopped?

This article introduces some U.S. laws that Native American Nations, groups, companies and individuals may be able to use to stop outsiders from using tribal names and symbols on non-Native commercial products or from falsely claiming to sell a Native American product. This article focuses on trademark law, the federal Indian Arts & Crafts Act, the Federal Trade Commission Act, the Food & Drug Act, and other state laws regulating trademarks, unfair competition, and consumer fraud and protection.

TRADEMARK LAW

The federal and state systems of trademark registration can be a powerful way for Native American Nations to register and protect their names - and to stop companies from using their names on products, such as the Jeep Cherokee. trademark law regulates and protects the names and slogans that companies use to sell their products. A trademark is a name, a brandname, a group of words or symbols that companies use to identify their products and services. A trademark is like a brand on cattle; it identifies where a product is front and the company that sells it. Coca Cola is a trademark and property, as is the name Cultural Survival. If someone uses your trademark on their products without permission, you can sue them for infringement, get a court order to make them stop and pay money as damages. To show a word is a trademark, a company will put a small "TM" (sometimes in a circle) next to the word. If the word is registered with the U.S. Patent & Trademark Office, a small "R" in a circle may be shown.

Not all words can be trademarked. For example, under the U.S. Trademark Act (the Lanham Act, 15 United States Code Section 1051 et.seq.), no one can trademark immoral or scandalous words, or words which bring people (alive or dead), institutions, beliefs or national symbols into "contempt or disrepute." Nor can words be trademarked which suggest a false connection with peoples, institutions, beliefs or national symbols. Flags, coats of arms or national insignias of any state, city or foreign nation cannot be trademark, nor can the names, portraits or signatures of a living person.

There are other restrictions. It is another general rule that geographic names, like London or Egypt, cannot be trademarks, although this rule has been broken. Sometimes the courts allow a geographic name as a trademark if it has developed secondary meaning or the geographic name is arbitrary. (A trademark has secondary meaning when it gains strong name recognition with consumers.) Generic words cannot be used as trademarks. A generic trademark is a world for what a thing is. For example, if you were an auto mechanic, you cannot trademark the words, "Auto Mechanic." Descriptive words (words needed to describe a product) generally cannot be trademark, unless they develop secondary meaning.

Usually a person cannot trademark someone else's trademark, but this rule has many exceptions. Sometimes two companies can use the same trademark for similar products in different geographical areas or on two different products. Or sometimes two companies can use the same trademark with the same products but in different channels of trade.

There are two central issues in trademark law. Will consumers be confused by use of the same or similar trademarks on different products? Which company used the trademark first? The likelihood of confusion and the date of first use are key questions in trademark disputes.

Trademark are protected by federal law and each state has its own law protecting trademarks. Hence the legal protection given to a trademark depends on federal law and what state law apply to the trademark. It also depends on the trademark's strength - the stronger the trademark, the more protection it gets. Strengthen depends on many factors, such as the uniqueness of the word, the amount of sales, the geographic area of sales, consumer recognition, how different the trademark is, first use, how many companies use the trademark, advertising costs, length of use, etc.

HOW DO WORDS OR SYMBOLS BECOME TRADEMARKS?

There are several ways to make a word or symbol into a trademark: 1) by using the trademark with a product and developing consumer recognition and trademark strength; 2) by registering the trademark with the US. Patent &Trademark Office or a state agency; and 3) (for Native Americans only) by registering a trademark through the Indian Arts & Crafts Board. Of these options, U.S. Patent and Trademark Office registration gives the most effective legal protection under American law. Federal trademark registration puts all U.S. companies on national notice that a person has registered the trademark and gives the trademark a legal presumption of validity. Then, after 5 years, there are fewer ways to legally challenging a federally registered trademark.

USE

Native American tribes, companies, groups or individuals who have sold goods using tribal names can argue that their own use has established trademark rights in their names. But by simply relying on use, Native Americans (or companies) run the risk that other companies also are using the same trademark and developing legal rights to this trademark.

REGISTRATION UNDER THE INDIAN ARTS & CRAFTS ACT

Although the federal Indian Arts & Crafts Act (25 United States Code Section 305 et.seq.) allows the federal Indian Arts & Crafts Board to register trademarks for Native Americans, the trademark itself is owned by the Board. However, in the 1970's the Board stopped registering and owning Native American trademarks. The Board believe that Native Americans, not the Board, should own the trademark. The Indian Arts & Crafts Board can help Native Americans register trademarks, but currently has no funding to help do this. So this Act, at this time, is not a very effective route for Native Americans to register their own trademark. The Act is helpful in that anyone who uses a Native American trademark without permission or falsely claims a product is Native American can be sued by either the U.S. Attorney General of Native Americans.

FEDERAL TRADEMARK REGISTRATION

To federally register a trademark, a simple application is filed with the Patent & Trademark Office (PTO), with a $200 fee for each class of goods the trademark is used in. The PTO then looks at (or examines) the trademark to see if it is a generic word, descriptive, deceptive, if there are other registrations, etc. If the trademark is approved, the trademark is published in the Trademark Office Gazette for 6 months, giving people time to object to it by filing an opposition. If the trademark then gets final approval, the trademark is federal registered.

In addition to regular trademarks, collective or certification trademark can be registered under the federal Lanham Act. Native American Nations and groups may be interested in registering a collective or certification trademark. A collective trademark shows membership in a particular group or that a product was made by members of a group, cooperative, association or other organization. Collective trademarks are owned by the group, not a person or company, Professional Golfers Association is a collective trademark.

Certification trademarks are somewhat different, although sometimes it is hard to see the differences between collective and certification marks. A certification mark cannot be used by its owner. Instead. the owner of the trademark allows others to use their trademark - but only if certain standards are met. The standards can be for quality, ways the products are made, national origin, if the product helps the environment, contains certain materials, etc. The Good House-Keeping Seal of Approval is a certification trademark.

Native American tribal councils, co-operatives or business groups could register a collective trademark using their tribal name and only allow members of their tribe or association to use the collective trademark. It a certification trademark is registered, only people meeting the certification standards for authenticity, quality, use of traditional ingredients or methods for making goods or preparing foods, etc., should be allowed to use the certification trademark.

GROUNDS FOR CHALLENGING A TRADEMARK

Anyone who believes that he would be damaged by a trademark registration can file a legal challenge to a trademark. The type of challenge depends on where a trademark is in the federal registration process. If a company has just applied to register a trademark using a Native American name, Native Americans can simply wife a protest letter to the PTO objecting to the application. If the Trademark Office has given conditional approval to the trademark application and proval to the trademark application and published the trademark in its Gazette, Native Americans have 6 months to file a formal opposition. If the trademark gets final approval, a petition to cancel the registration can be filed.

At the application stage, there are more legal grounds (or reasons) for challenging a trademark. Native Americans may be able to file petitions to oppose a registration for a tribal name using many of these grounds. For example, Native Americans might file an opposition if: 1) they are the first users of the word in commerce; 2) the trademark is a name used by tribal businesses, organizations or religious groups; 3) the trademark uses the name or insignia of their Nation; 4) it is morally offensive and scandalous to them to have their names listed on a beer can, a pick-up truck or a home heating oil company' 5) the public will confuse this trademark and product with tribal goods; 6) the trademark is misdescriptive or deceptively misdescriptive in that it will lead consumers into thinking that the products if from the tribes;7) the trademark suggests a false connection with the tribe, tribal groups, religious institutions, beliefs or national symbols; 8) the trademark is the name of a person living or dead, a geographic place or nation. These are just some reasons for a challenging. If the PTO allows the trademark to be registered, a petition to cancel the trademark can be filed on these same grounds for the first 5 years.

After five years, a petition to cancel a trademark can be field for fewer reasons because it has become incontestable. An incontestable trademark cannot be challenged because it is descriptive, likely to create confusion or someone else used the trademark first. But an opposition still can be filed if the trademark; 1) is now a generic word, a coat of arms, flag or insignia of a state, city or foreign company; 2) the name of, picture of signature of a living persons; 3) is scandalous, immoral, deceptive or suggests a false connection with institutions, beliefs, persons (living or dead) or national symbols; 4) is a certification or collective mark being used incorrectly; 5) is a certification or collective mark being used in a way as to deceptively misdescriptive; or 6) is geographically mis-descriptive; or deceptive (on the date of registration), among other reasons. A registration also can be challenged if the owner has abandoned the trademark, lost control of it because too many people are using it without permission, or if he got the trademark through fraud.

For example, if the Hornell Brewing Company has a federal trademark registration for Crazy Horde for its malt liquor, members of Crazy Horse's tribe or other Native Americans could file a petition to cancel this registration on the grounds the registration is immoral, offensive or scandalous to Native peoples. This objection can always be raised. This is similar to the Senussi case, where the Trademark Office denied a trademark application for Senussi for cigarettes because it was scandalous to the Senussi Muslim sect which prohibited smoking as part of its religious practices. In re Reemtmsa Cigaretten-fabriken GambH, 122 U.S.P.Q. 339 9TTAB 1959).

OTHER CHALLENGES

A company using a Native American tribal name as a trademark also might be challenged under the Lanham Act, the Federal Trade Commission Act (FTC Act) and state laws that regulate trademarks and unfair competition (the rules for what businesses can and can't I do in the marketplace). Both the Lanham Act and the Federal Trade Commission Act regulate how companies compete against each other. The Federal Trade Commission, in particular, defines unfair competition very broadly as acts that offend public policy; violate a common law, statutory or established concept of fairness; are immoral, unethical unsecrupulous, oppressive, or unsecurmpulous; or that cause substantial injury to consumers. (The FTC Act is discussed in more detail later.) Violations of either act could occur if non-Native companies sell products which directly claim, strongly suggest or may mislead the public into believing they are selling authentic Indian products. The common law and statues of many states have similar laws against unfair competition and trademark infringement. (Common law is the law made by judges' decisions, not by the statues passed by state legislatures.) Possible claims under these laws include: trademark infringement, getting a federally registered trademark by fraud, false advertising, false designation of origin, false description, planning off, dilution of trademark and goodwill, and other forms of unfair competition 9such as deceptive trade practices, misbranding of goods, or misappropriation of some concrete business right of plaintiff that is not protected by traditional trademark or copyright law but which constitutes unfair competition). Whether these laws apply will depend on the facts in the situation.

ACTS SPECIFICALLY PROTECTING NATIVE AMERICAN TRIBAL NAMES & PROHIBITING MISLABELING PRODUCTS AS INDIAN

The federal Indian Arts & Crafts Act and several state statues directly prohibit companies from falsely claiming that their products are authentic Native American goods. Under these laws a non-Native company selling a product which (through its name, label pictures, symbols or copy or other advertising) falsely claims to be an authentic Native product - or strongly suggests this - could be sued under these acts. The federal Indian Arts & Crafts Act is a strong statute since anyone falsely selling goods as Indian can be sued, either by the US. Attorney General or Native Americans. No trademark has top be involved. The Indian Acts & Crafts Act authorizes the U.S. Attorney General to bring civil or criminal charges against anyone who...

"offers or displays for sale or sells a good with or without a Government trademark, in a manner that falsely suggests it is Indian produced, an Indian product, or the product of a particular Indian or Indian tribe of Indian arts and crafts organization ..." 7(15 U.S.C. Section 305e.)

Civil suits against violators can be field by Native American Nations, individuals or any tribal arts and crafts organization. Violators can be forced to pay triple damages or up to $1,000 for each day they sold the false products. There may be a question under this Act about what is an "Indian product." Since the Act is generally directed at arts and crafts, the coverage of this Act might be limited to inauthentic Native American arts and crafts.

Thirteen states have statues similar to the federal Indian Arts and Crafts Act. These states are Alaska, Arizona, California, Colorado, Maine, Minnesota, Montana, Nebraska, Nevada, New Mexico, Oklahoma, South dakota and Texas.

LAWS PROTECTING CONSUMERS FROM COMPANIES & COMPANIES FROM EACH OTHER

Other federal acts and state laws protect consumers from the unscrupulous practices of businesses and may be helpful to Native Americans dealing with companies selling false Native American products or products using tribal names. On the federal level, the Federal Trade Commission Act and the Food, Drug & Cosmetic Act each protect consumers from mislabeled products and from fraudulent and misleading product labels. Clearly, when companies use Native American names and symbols on their products, they can mislead consumers into believing these products are from Native Americans.

FTC ACT

The Federal Trade Commission Act outlaws unfair competition, false advertisement, and unfair or deceptive acts and practices which affect commerce and consumers. (15 United States Code Sections 45 & 52). These terms are broadly defined. Consumer unfairness occurs when consumers are harmed, or by acts which violate public policy or are unethical and unscrupulous. Deceptive practices are representations, omissions or practices that are likely to mislead and harm consumers.

The Federal Trade Commission has already ruled against several companies selling products using Native American tribal names and symbols. In Bloom Brothers (23 F.T.C. 1157, Stipulation 1862 (Nov. 5, 1936), the company put pictures of Native Americans and scenes from their lives, such as wigwams, canoes, feathered head-dresses and typical decorative work, in their sales catalogue. The FTC ruled the Bloom Brothers could not use these pictures unless their catalogue had "appropriate language, clearly indicating that the article so described is not made by American Indians but is manufactured by others than such Indians." Also, they could not use the words "Indian" and "Indian bracelet" in their ads. Another FTC decision, In re Colorado Saddlery Company (62 F.T.C. 663 (1963), stopped a company from using the tribal name "Comanche" and the words "Indian" and "Sun Dance" with blankets. These ads were found to be false and misleading. In G&G Mfg. & Souvenir Co. (62 F.T.C. 663 (1963), the FTC found the G&G Manufacturing Company misled the public about the materials, workmanship and origin of the products it sold under the designation, "Indian Goods."

To go to the Federal Trade Commission, a complaint is filed with the FTC. not in a court. Anyone can file a complaint and there is no specific form. The complaint simply should explain the violation, give supporting information or evidence and include the name and address of the person filling a complaint to the FTC is getting the FTC to act, because of the number of complaints they receive. However, the FTC is under a statutory requirement to issue a complaint if it is in the public interest. So the FTC's failure to act can be appealed and reviewed under the federal Administrative Procedures Act. Also, anyone can petition the FTC to pass regulations. So Native American groups might want to petition the FTC and ask it to establish rules prohibiting the use of indigenous names and symbols on products sold by non-Native companies.

FOOD, DRUG & COSMETIC ACT

v The Food, Drug & Cosmetic Act (21 United States Code Section 331), prohibits the sale of delivery of misbranded or adulterated foods, drugs or cosmetics. One of the Act's goals is "to prevent injury to health and deception by putting words ... on labels which may naturally lead a purchaser into believing that he is getting one thing when in reality he is getting another." (United States v. 150 Cases of Fruit Puddine, 211 F. 2d 360, 363 (D. Mass 1914.) A misbranded product is one which; 1) has a false or misleading label; 2) is offered for sale under the name of another product; 3) misrepresents the identity of the food or ingredients, or the product's quality, purity, freshness, grade or naturalness; 4) misrepresents the product's place of origin or geographic original; or 5) is an imitation of another food. Adulteration can occur when a manufacturer deletes or substitutes one ingredient for another or deceives consumers about quality or value. This Act may help Native Americans. For example, Hopi Blue Popcorn appears to violate the Food, Drug & Cosmetic Act, since it does not contain true blue corn and its label strongly suggests it is made by the Hopi or from the Hopi reservation.

Like the FTC Act, complaints about a food or cosmetic are filed with the Food & Drug Administration (FDA). A complaint petition must state the action requested, reasons for the request, any environmental or economic impact, and a certification that the statements are true. People also can petition the FDA to pass regulations, set food standards or standards of identity. Unfortunately, the FDA is not required to respond complaints and it can take years for it to adopt rules. Since the FDA is most likely to act if it feels there is widespread problem, a good strategy might be for Native American Nations and groups to file complaint petitions together - or jointly ask the FDA to pass regulations, create food standards or identity standards for Native Americans foods, such as wild rice and blue corn. Although the FDA focuses primarily on health issues, if the FDA sees the mislabeling of Native products as a serious problem, the agency could ask the FTC to act, (A violation of the Food, Drug & Cosmetic Act also is a violation of the FTC Act.)

OTHER STATE LAWS

Many states have laws similar to the Food. Drug & Cosmetic Act and the Federal Trade Commission Act which protect the public (and companies) from improper label and advertising claims. Almost all states have broad and powerful consumer protection laws that could be used against companies making (or strongly suggesting) false claims of Native American-ness. Also, all all states have civil and criminal laws against fraud.

CONCLUSION

When companies use Native American names to sell their non-Native products they harm members of that Nation other Native Americans, consumers and Native American companies trying to succeed in the American market. The laws briefly discussed in this article may help stop these practices. It is critical to remember there is no way to predict the outcome of using any of these laws. Courts apply the same laws differently and often legal opinions contradict each other. Native Americans Nations may want to consider whether a new federal law is needed to specifically outlaw the use of Native American names and symbols on non-Native products.

Article copyright Cultural Survival, Inc.